Snap-On Inc. v. Robert Bosch LLC, No. 09 C 6914, Slip Op. (N.D. Ill. Apr. 28, 2016) (Shah, J.).
Judge Shah denied defendants’ (collectively “Bosch”) 35 USC § 285 motion for attorney’s fees in this patent dispute involving tool patents.
As a threshold matter, Bosch was the prevailing party, as required by § 285. While plaintiff Snap-On’s voluntary dismissal of its patent claims was not enough to make Bosch the prevailing party, Snap-On’s provision of a covenant not to sue made Bosch the prevailing party.
While Bosch was the prevailing party, it did not prove that the case was an exceptional one warranting a fees award. Of particular note, the Court held as follows:
- Bosch’s pre-suit investigation did not make the case exceptional. Attorneys need not necessarily have technical backgrounds to perform a pre-suit analysis in a patent case. It was enough, in this case, that Bosch’s counsel had experience litigating patent suits. Furthermore, Bosch’s reliance upon a Bosch engineer’s analysis conducted over several days was not unreasonable.
- The substantive strength of Bosch’s claim could not be considered because they were ruled upon. Bosch’s voluntary dismissal did not lead to a presumption that each of its infringement and validity allegations were wrong.
- Snap-On’s inequitable conduct claim was not sufficiently developed to support an exceptional case finding.
- Bosch’s tactics that prolonged resolution of the case was another reason that the case could not be found exceptional.
- Snap-On continuing to litigate despite Bosch’s relatively low sales did not make the case exceptional.
- The Court also noted that it was free to consider both parties’ conduct in performing its exceptional case analysis.